G.R. No. 222366 - W Land Holding, Inc. vs. Starwood Hotels and Resorts Worldwide, Inc.

Case Summary (G.R. No. 222366)

Key Dates and Procedural Posture (concise)

Starwood filed for the "W" mark (Dec. 2, 2005) and registration was granted (Feb. 26, 2007). W Land filed its own "W" application (Apr. 20, 2006) and opposed by Starwood; BLA found confusing similarity (Apr. 23, 2008). W Land later filed a petition for cancellation of Starwood’s registration for non‑use (May 29, 2009). The BLA ordered cancellation (May 11, 2012); IPO DG reversed and dismissed the cancellation (Jan. 10, 2014); CA affirmed the IPO DG (June 22, 2015) and denied reconsideration (Jan. 7, 2016). The Supreme Court denied the petition for review.

Applicable Law and Constitutional Basis

Primary statutory and regulatory authorities applied: Republic Act No. 8293 (Intellectual Property Code), specifically provisions on marks (Sections 121.1, 124.2, 151.1, 152.3); Trademark Regulations (Rules 204 and 205) as amended by IPO Office Order No. 056‑13 (Rule 205 enumerating acceptable proof of actual use). The Court’s analysis proceeds under the 1987 Philippine Constitution where relevant (including reference to English as an official language in assessing website language).

Factual Summary Relevant to Use

Starwood submitted a notarized Declaration of Actual Use (DAU) with attachments in 2008. Starwood operates interactive websites and registered Philippine domain names (e.g., whotels.ph and related domains) through which Philippine residents can view, reserve, and pay for accommodations in W Hotels worldwide. The websites provide a Philippine contact number, permit currency conversion (including Philippine peso), and generate measurable Philippine web traffic data. W Land’s cancellation petition alleged Starwood had not used the "W" mark in the Philippines and therefore the registration should be cancelled for non‑use.

Legal Issue Presented

Whether the CA correctly affirmed the IPO DG’s dismissal of W Land’s petition to cancel Starwood’s "W" registration for non‑use under the IP Code and Trademark Regulations, given that Starwood had no physical W hotel establishment in the Philippines but operated interactive websites and other online channels accessible to Philippine consumers.

Legal Standards on Trademark Use and Proof

Registered marks enjoy a prima facie presumption of validity and ownership, but that presumption may be overcome by proof of non‑use or abandonment.
The IP Code requires a registrant to file a DAU with evidence of actual use within a prescribed period; failure permits removal.
"Use" must be genuine (bona fide), not merely token—i.e., tending to result in or actually resulting in commercial interaction or transactions in the ordinary course of trade.
Rule 205 (as amended by Office Order No. 056‑13) specifies acceptable evidence, explicitly accepting certain internet‑based materials (downloaded website pages showing sales/services in the Philippines; receipts of online sales; photographs; brochures; contracts), and allows a website to substitute for an outlet address where goods or services are available only online.

Court’s Analytical Framework on Internet Use

The Court recognized (consistent with Rule 205 and international practice cited in the decision) that the internet is a commercial marketplace and that trademark goodwill may be created and protected through online advertising and interactive websites. However, mere global availability or display on the internet is insufficient; the owner must show a discernible commercial link or intent to transact with consumers in the specific jurisdiction (the Philippines). Relevant indicia of targeting or a commercial effect within the State include: presence of local contact information, local webpages or content, use of language(s) understood locally, prices in local currency or currency conversion, availability of local payment methods, and measurable local web traffic or transactions. The Court emphasized that token or purely preparatory website posting designed only to reserve rights without intending commercial activity in the Philippines will not satisfy the genuine‑use requirement.

Application of Standards to the Present Facts

Applying the above framework, the Court found Starwood’s evidence sufficient to show genuine use of the "W" mark in the Philippines through its interactive online reservation system and related website features. Supporting facts included: registered Philippine domain names; website functionality enabling Philippine users to book and pay for W Hotel services; a Philippine contact number; use of English (an official language usable by the Philippine market); currency conversion to Philippine peso; and data demonstrating Philippine user visits to the website. These elements, taken together, established a discernible commercial effect and commercially motivated relationships with Philippine consumers, satisfying the genuine‑use requirement for the services covered by the Class 43 registration.

Effect of Use for Reservation Services on the Registered Class

Under Section 152.3 of the IP Code, use of a mark in connection with one or more services in the class prevents cancellation for the entire class. The Court held that Starwood’s use of the "W" mark for reservation services via its interactive website constituted use within Class 43 (

Case Syllabus (G.R. No. 222366)

Citation and Court

Supreme Court of the Philippines, Second Division.
Reported at 822 Phil. 23; 114 OG No. 37, 6476 (September 10, 2018).
G.R. No. 222366; decision penned December 04, 2017 (ponencia by Justice Perlas-Bernabe).
Appeal from: Court of Appeals Decision dated June 22, 2015 and Resolution dated January 7, 2016 in CA‑G.R. SP No. 133825; administrative decisions from the Intellectual Property Office Bureau of Legal Affairs and Director General.

Parties

Petitioner: W Land Holdings, Inc. (W Land).
Respondent: Starwood Hotels and Resorts Worldwide, Inc. (Starwood).
Posture: W Land filed petition for cancellation of Starwood’s registered trademark "W"; Starwood defended the registration and alleged actual use in the Philippines.

Procedural History (chronological)

December 2, 2005: Starwood filed application to register the trademark "W" for Classes 43 and 44 (Nice Classification).
April 20, 2006: W Land applied to register "W" for Class 36.
February 26, 2007: Starwood’s "W" application was granted and registered in its name.
Starwood opposed W Land’s Class 36 application; BLA found W Land’s "W" confusingly similar in Decision dated April 23, 2008.
W Land’s motion for reconsideration to BLA denied by Resolution dated July 23, 2010.
May 29, 2009: W Land filed a Petition for Cancellation of Starwood’s "W" for non-use under Section 151.1 of RA 8293 (IP Code).
Starwood submitted a Declaration of Actual Use (DAU) and evidence with the Director of Trademarks (statements in the record reference both April 3, 2008 and December 2, 2008 as dates associated with DAU submissions).
May 11, 2012: IPO Bureau of Legal Affairs (BLA) Decision ordered cancellation of Starwood’s registration for non-use.
Starwood appealed to the IPO Director General (IPO DG).
January 10, 2014: IPO DG reversed the BLA and dismissed W Land’s Petition for Cancellation.
February 18, 2014: W Land filed petition for review with the Court of Appeals.
June 22, 2015: Court of Appeals affirmed IPO DG’s Decision.
Motion for reconsideration to the CA denied by Resolution dated January 7, 2016.
Petition for review on certiorari filed with the Supreme Court; Supreme Court DENIED the petition and AFFIRMED the CA Decision and Resolution.

Facts (essential factual matrix)

Starwood registered the "W" trademark for hotel, reservation and related services (Class 43) and for Class 44 services.
W Land sought to register "W" for Class 36 (real estate/financial services), prompting opposition and inter partes disputes.
W Land’s Petition for Cancellation alleged Starwood had not used the "W" mark in the Philippines (no hotel or establishment in the Philippines bearing the mark) and that Starwood’s registration blocked W Land’s usage on real estate.
Starwood asserted actual use by filing the DAU with evidence of use; asserted hotel and leisure business conducted directly and indirectly (subsidiaries/franchisees) and via interactive websites permitting Philippine residents to make reservations/bookings.
Starwood’s DAU and attachments were found by BLA to show uses located abroad; BLA concluded these did not prove actual use in the Philippines.
Starwood demonstrated registered Philippine domain names (whotels.ph, wreservations.ph, whotel.ph, wreservation.ph), an interactive website accessible to Philippine residents, a designated Philippines contact number (+80032525252), English language availability on the site, currency conversion to Philippine Peso and capability for instantaneous booking and payment with immediate confirmation.
Data showed a growing number of internet users in the Philippines visiting Starwood’s website since 2003.

BLA (Bureau of Legal Affairs) Ruling (May 11, 2012)

Ordered cancellation of Starwood’s "W" registration for non-use.
Reasoning:
- The DAU and attachments submitted by Starwood referred to hotels/establishments located abroad; therefore, they did not prove use “in the Philippines.”
- Emphasized that “use” under Section 151.1(c) must refer to actual attachment of the mark to goods/services sold or availed of and located in the Philippines.

IPO Director General Ruling (January 10, 2014)

Reversed the BLA and dismissed W Land’s Petition for Cancellation.
Findings and reasoning:
- Starwood’s submission of the DAU and attachments, and acceptance by the IPO Bureau of Trademarks, sustained the registered status and created a presumption of compliance with registration requirements.
- The absence of a physical Starwood hotel in the Philippines does not equate to absence of use in the country.
- Interactive websites and related evidence were sufficient to indicate actual use in the Philippines, consistent with Rule 205 as amended by IPO Office Order No. 056‑13.
- Protection of Starwood’s intellectual property rights and its undisputed prior ownership weighed against cancellation.

Court of Appeals Ruling (June 22, 2015)

Affirmed IPO DG Decision.
Key points:
- Hotel business inherently allows reservations/bookings irrespective of physical hotel presence in a particular location; actual existence in a place is not necessary to be considered doing business there.
- Recognized the internet as a powerful commercial tool allowing businesses to reach consumers without physical presence; interactive websites can indicate actual use in the Philippines.
- Noted Starwood’s prior application for the &